by Dennis Crouch

Digital-Vending Services International, LLC v. The University of Phoenix, Inc. (Fed. Cir. 2012)

In a split decision, the Federal Circuit has reversed the lower court's claim construction and vacated the summary judgment of non-infringement with respect to impacted claims. On remand, the district court will be required to reconsider whether whether Digital-Vending's patents covering aspects of internet-based content delivery are valid and infringed. Chief Judge Rader penned the opinion and was joined by Judge Linn and joined-in-part by Judge Moore. In her partial dissent, Judge Moore focused on the doctrine of disavowal of claim scope – arguing that the "exacting" standard for disavowal of claim scope was met in this case and therefore takes precedence over other canons of construction in the analysis of claim scope.

Method Claim Written as an Apparatus: Before getting to the heart of the claim construction debate, it is important to mention the court's recognition here that a Beauregard claim should properly be interpreted as a method claim rather than an apparatus or composition of matter claim. In some instances, patent law treats method claims differently than it treats apparatus claims. Because of this distinction, many patent attorneys choose to include both method and apparatus claims within the same patent whenever possible. In discussing the asserted claims, the Federal Circuit opines that claims 1-22 of asserted Patent No. 6,282,573 are all "method claims" despite the fact that claims 13-22 expressly claim "a computer storage medium" containing data and instructions for causing a computer to perform a particular method. Noting this potential discrepancy, the court wrote that these Beauregard claims are "functionally-defined claims" that "should be treated as method claims to avoid exalting form over substance." Quoting CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011). The court also noted that independent claim 23 - directed to a "computer architecture" with various interconnected servers should be treated as a system rather than a method. (Note – Judge Moore did not dissent from this portion of the opinion).

How Prosecution History Impacts Claim Scope: In many patent cases, the most hotly contested legal issue is claim construction and the resulting claim scope. Broadly construed claims cast a wider net over potential infringers, but are also more likely to be held invalid than those that are more narrowly construed. There a variety of thoughts on how the specification and prosecution history should impact claim construction. Strongly-held maxims include the notion that claims should be interpreted in light of the specification, but limitations found in the specification should not be automatically added as implicit limitations of claim scope. In Phillips, we learned that the specification should be given greater consideration. Phillips also gave credence to arguments associated with claim differentiation. Thus, in that case, the fact that a claim referred to "steel baffles … strongly implie[d] that the term 'baffles' does not inherently mean objects made of steel." (quoting Phillips). An additional and important claim construction canon involves the limitation of claim scope that has been the subject of clear disavowal. A problem with canons of construction is that they often conflict and the difficulty for courts comes in deciding which of the many canons to give precedence. Here, there is no question on the law that a clear disavowal of claim scope takes precedence over other canons of construction. The dispute in the case is on whether a disavowal occurred.

In this case, some of the patented claims refer to a "registration server being further characterized in that it is free of content managed by the architecture" and others refer to the "registration server," standing alone. This difference between the claims provides a strong suggestion that athe bare "registration server" limitation does not require that the server be free of managed content. In its analysis, the majority court noted that the patentee repeatedly referred to the registration server as being free of managed content, but also that the patent attorney had been "careful" to "avoid any hint [in the specification] that the inventors clearly disavowed claim scope with respect to the method claims." Thus, the court allowed a broad interpretation of the "registration server" term.

The dissent disagreed with this analysis and instead argued that the majority opinion "allows the patent owner to reclaim surrendered claim scope, thus subverting the public notice function of patents." Here, the dissent focused on the patentees "repeated statements in the specification" indicating that "each" of the registration servers are separated from any managed content and that such an architecture is a "requirement" not to be "violated." For Judge Moore, those statements lead her to the conclusion that "[i]t is difficult to imagine a clearer case of disavowal."

On remand, the lower court will be asked to determine whether the defendants infringe the asserted claims under the broader claim interpretation put forth by the majority.